SpicyIP Weekly Review (March 27-April 1)

[This weekly review is co-authored with SpicyIP intern Anjali Baskar. Anjali is a fourth-year student pursuing B.B.A. LL.B. (Hons.) from School of Law, Christ University, Bengaluru. She is keenly interested in exploring various fields in law, especially IP, Media & Entertainment.]

Here are the quick summaries of the whopping 6 posts, 8  case summaries and other IP developments that took place last week. Important IP cases that we’re missing out on? Especially from other High Courts?  Please let us know so we can include them!

Highlights of the Week

Announcing the SpicyIP Doctoral Fellowship!

We’re extremely excited to be launching the SpicyIP Doctoral Fellowship and request readers to pass it on to any potential applicants. It’s for anyone pursuing a PhD in India, in IP or Innovation policy, & with a focus on Public Interest, transparency & accountability, or socially beneficial legal and policy levers.

Bombay High Court Grants (the First?) Section 32 License to Translate a Literary Work in Marathi

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In perhaps the first instance of its use, the Bombay High Court passed a Section 32 license, to translate Madeleine Slade (popularly known as Mira Behn)’s autobiography “The Spirit’s Pilgrimage” into Marathi. In this post, Praharsh highlights the key requirements within the provision and how the same were satisfied in the present case.

Trademark Disparagement, Free Speech and Bullying: The Case of Dabur v. Dhruv Rathee

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In another product disparagement case involving Dabur, Calcutta High Court directed Youtube and Meta to takedown an informative video by Youtuber, Dhruv Rathee for allegedly disparaging Dabur’s “Ready to Serve” fruit juice under the brand “Real”. Discussing the order, Srujan Sangai highlights the relevant provisions from the Trademarks Act, previous cases involving disparagement claims and analyzes court’s rationale behind the order.

Other Posts

SpicyIP Tidbit: Additional Records Allowed Before Framing of the Issues Says the Delhi High Court

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Are additional documents allowed after filing the plaint? Recently Delhi High Court in Bennett Coleman & Co. v. ARG Outlier Media Pvt Ltd discussed this question. Read SpicyIP tidbits by Lokesh to know more about the development.

SpicyIP Tidbit: Delhi High Court says Registration of a Design can be Prima Facie Proof of Validity

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Is Design Act similar to Trademark Act in terms of the validity of registration? Recently Delhi High Court in Sirona Hygiene Private Limited v. Amazon Seller Services Private Ltd, observed in the affirmative, holding that registration of the design stands as a factor in the registrant’s favour as prima facie evidence of the validity of the design. Read SpicyIP tidbits by Lokesh to know more.

Skechers Inc. USA Vs. Pure Play Sports – Part II : Imposition Of Actual Legal Costs – No More A Far-Fetched Aspiration In Today’s Legal Environment

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In this follow-up post to the Delhi High Court’s 2018 decision in Sketchers USA v. Pure Play Sports, Abhimanyu Chopra, Urvashi Misra and Aman Chaudhary highlight the issues commonly faced while pursuing execution proceedings to realize the actual legal costs awarded by the court, keeping the subsequent development in the dispute at the center of the discussion.  

Case Summaries

Delhi High Court asks reasons for non-rejection of plaint when earlier suit filed with identical reliefs of trademark infringement and passing off.

Case: Karim Hotel Pvt Ltd v. Kareem Dhanani on 24 March, 2023 (Delhi High Court)

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The plaintiff, Karim Hotel Pvt. Ltd., filed a trademark infringement and passing off suit against  the defendant, Kareem Dhamani, since the defendant’s mark ‘Kareem’ was deceptively similar to the plaintiff’s mark ‘Karim’. The plaintiff had also filed a rectification petition before the IPAB under Section 57 of the Trademarks Act to remove the defendant’s registered trademark and had instituted a suit seeking interlocutory injunctive relief both on the grounds of infringement and passing off, which are identical to the present suit. The Court had adjourned the case sine die until the outcome of the IPAB regarding the rectification petition was delivered since the same could be challenged by either party to the suit. The present suit was disposed of by the Court, stating that the plaintiff had the liberty to file an appropriate proceeding after the order by the IPAB was passed. However, after the IPAB was abolished, the rectification proceeding was transferred to the Bombay High Court in terms of the Tribunals Reforms Act, 2021. The Court held that the plaintiff would be required to explain why the present suit should not be dismissed under Order VII Rule 11 of the CPC, especially since the reliefs sought in the previous suit are the same as this one.

Deputy Controller of Patents and Designs directed to process patent application that they mistakenly claimed was delayed due to a computer generated error in recording its filing date.

Case: Cambridge Enterprises Ltd. v. The Controller of Patents on 23 March, 2023 (Calcutta High Court)

An appeal was filed against an order of the Deputy Controller of Patents & Designs which had stated that there was delay on the part of the Appellant for filing the subject patent application. It was stated that the application was filed beyond the statutory period of 31 months, which the Appellants contended was erroneous as the application was filed on June 5, 2009 and not on June 15, 2009, as considered by the Controller. The appellants contended that the impugned order fails to appreciate and consider their documents, including the official filing receipt issued by them as well as the internal noting made by them on their note-sheet, both of which would conclusively indicate that the subject patent application was duly filed on 05/06/2009 within the statutory deadline of 31 months which ended on 08/06/2009. Thereafter, the Respondents admitted that the said date was recorded incorrectly and reflects a mistake on part of the respondents, it being a computer-generated error. Thus, the impugned order was set aside and the Deputy Controller of Patents and Designs was directed to process the patent application expeditiously in accordance with law and positively within 3 (three) months from the date of communication of the order.

Delhi High Court dismissed writ petition against TM Registrar for publishing deceptively similar mark to “Amul”.

Case: Kiara Dist. Cooperative Milk Products v. Registrar of Trademarks on 22 March, 2023 (Delhi High Court)

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The court disposed of a writ petition seeking a writ of mandamus against the defendant for accepting and publishing trademarks that are deceptively similar to the plaintiff’s Amul mark. The court, however, disposed of the application holding that the Trademarks Act is versed with adequate and appropriate provisions to handle these matters. The court specifically remarked that “the legislature must be presumed to know its job.”

Bombay High Court holds that disputes among Facebook groups are not subject-matter of IP.

Case: The Himalayan Club v. Kanwar B. Singh & Ors. on 24 March, 2023 (Bombay High Court)

Bombay High Court clarified that disputes concerning ownership of a Facebook group will not amount to an IP dispute and set aside the order of the City Civil Court.

Calcutta High Court allows for revision of petitioner’s charges under IPC and criminal remedies under Copyright and Trademark Acts because of an absence of prima facie infringement.

Case: M/s Versalis International & Anr. v. State of West Bengal & Anr. on 28 March 2023 (Calcutta High Court)

Petitioner was accused of offences under Section 63B/65B of the Copyright Act and Sections 103/104 of the Trademarks Act along with Sections 120B/420 of the Indian Penal Code. Petitioner No. 1 claimed that the opposite party was well aware of an agreement entered into by the former with the ex-management of Duckback, which were in the business of manufacturing waterproof-wearing apparels and bags, to use the domain name “Duckback.in” in the capacity of an exclusive dealer for Duckback products.  When Petitioner No. 2 was brought in as the new director of Petitioner No. 1 company, a dispute arose with respect to the rate of discounts to be offered by Petitioner No. 1.

The Court admitted the revision by the petitioners because there was no prima facie infringement under the Copyright and Trademark Acts and an arguable case was made out by the petitioners as to why they should not attract charges under Sections 120B/420.

Delhi High Court refuses to restrain the Defendants from selling generic variants of Linagliptin.

Case: Boehringer Ingelheim Pharma GMBH v. Vee Excel Drugs and Pharmaceuticals Pvt. Ltd. & Ors., and the combined matters on 29 March 2023 (Delhi High Court)

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The Delhi High Court refused to grant an interim injunction against the defendants for manufacturing the drug linagliptin, holding that prima facie the drug is vulnerable to revocation. The court observed that the petitioner claimed that the drug was covered under genus and species patents till the time both patents subsisted. However, after the expiry of the genus patent, it asserted that the drug is covered only in the species patent. The court objected to this assertion holding that the plaintiff cannot be allowed to “approbate and reprobate”. The court ruled that by filing multiple patents for both genus and specie patent, the petitioner has attempted to evergreen the patent protection granted and the same is impermissible under the Indian Patent Act. In reaching the above conclusion, the court also addressed questions pertaining to presumption of validity of the patent, important of opposition in presuming validity, and also highlighted the importance of information submitted in Form 27.

A division bench of the Delhi High Court re-affirms the Single Judge’s Order in the Ericsson – Intex SEP dispute. Clarifies that FRAND is not a one-way street, where the obligations are on the patentee alone.

Case: Intex Technologies (India) Ltd. v. Telefonaktiebolaget L M Ericsson FAO(OS) (COMM) 296/2018  and connected matters on 29 March 2023 (Delhi High Court)

In this matter concerning 8 SEPs of Ericsson, a Division Bench of Delhi High Court, upheld the Single Judge’s finding regarding the validity of the SEPs and fulfilment of Erricson’s FRAND commitments. The court observed that the FRAND is not a one way street where the obligations are on the patentee alone. The court also held that the conduct of the parties during negotiations is one of the key factors to determine the willingness of the parties to enter into an agreement and that during the negotiations, the implementer has to either accept the licensor’s offer or give a counter offer. The court also emphasized on the importance of ad-hoc royalty during the interregnum, as according to it, absence of the payment will give an “unfair competitive edge” to such a party.

Delhi High Court restrains the Institute of Cost Accountants of India from using the ICAI mark.

Case: The Institute of Chartered Accountants of India v. The Institute of Cost Accountants of India on 21 March 2023 (Delhi High Court)

The Delhi High Court restrained the Institute of Cost Accountants of India from using the ICAI acronym, holding that there is a prima facie likelihood of confusion on the part of public regarding its use of the mark. The court further noted that without additional material, it is impossible to distinguish whether the reference to ICAI was to the services of the plaintiff or the respondent.

Other IP developments

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International IP developments

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